Ex Parte Herdman et al

Patent Trial and Appeal Board

Oct 24, 2017

14184011 (P.T.A.B. Oct. 24, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/184,011 02/19/2014 Roderick D. Herdman 2156-699A 9235
34238 7590 10/26/2017
ARTHUR G. SCHAIER
CARMODY TORRANCE SANDAK & HENNESSEY LLP
195 CHURCH STREET
P.O. BOX 1950
NEW HAVEN, CT 06509-1950
EXAMINER
LIN, JAMES
ART UNIT PAPER NUMBER
1754
NOTIFICATION DATE DELIVERY MODE
10/26/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODERICK D. HERDMAN,
ROSHAN V. CHAPANERI, and ALISON HYSLOP
Appeal 2016-004639
Application 14/184,011
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 11, 13-28, and 30. A hearing was held on
October 12, 2017. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 In this Decision, we refer to the Specification filed February 19, 2014, the
Final Office Action mailed July 16, 2015 (“Final Act.”), the Appeal Brief
filed September 15, 2015 (“Appeal Br.”), the Examiner’s Answer mailed
March 11, 2016 (“Ans.”), and the Reply Brief filed March 31, 2016 (“Reply
Br.”).
2 Appellant is the Applicant, which, according to the Appeal Brief, is
MacDermid Acumen, Inc. Appeal Br. 1.
Appeal 2016-004639
Application 14/184,011
The subject matter on appeal relates to a method of treating
electroplating racks used to support non-conductive substrates during a
metallization step. Spec. 1,11. 5-6. Claim 11, reproduced below from the
Claims Appendix of the Appeal Brief, is illustrative of the claims on appeal.
11. A method of treating an electroplating rack used for
supporting non-conductive substrates during a plating process,
wherein the electroplating rack is at least partially coated with
with [sic] PVC plastisol, the method comprising:
a) contacting the electroplating rack with a non-aqueous
solution comprising a metallization inhibitor;
b) mounting non-conductive substrates to the
electroplating rack that has been contacted with the non-
aqueous solution comprising a metallization inhibitor; and
c) etching the non-conductive substrates supported on the
electroplating rack with an etchant that does not contain
chromic acid.
Appeal Br. 10 (Claims Appendix).
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1: Claims 11, 13-17, 19, 22-26, and 30 under 35 U.S.C.
§ 103(a) as unpatentable over McCormack et al.3 (US 3,443,988, issued May
13, 1969) (“Schneble”) in view of Brindisi, Jr. et al. (US 3,619,243, issued
November 9, 1971) (“Brindisi”) and Bengston (US 2005/0199587 Al,
published September 15, 2005) (“Bengston”) (Final Act. 3-6; Ans. 3-7);
3 The Examiner and Appellant refer to this reference as Schneble based on
the second named inventor, Frederick W. Schneble, Jr., rather than the first
named inventor John F. McCormack. To avoid confusion, we do the same
in this Decision.
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Application 14/184,011
Rejection 2: Claims 18, 27, and 28 under 35 U.S.C. § 103(a) as
unpatentable over Schneble, Brindisi, Bengston, and Polichette et al.
(US 3,930,963, issued January 6, 1976) (“Polichette”) (Final Act. 6-7;
Ans. 7-8); and
Rejection 3: Claims 20 and 21 under 35 U.S.C. § 103(a) as
unpatentable over Schneble, Brindisi, Bengston, and Hurditch
(US 5,817,388, issued October 6, 1998) (“Hurditch”) (Final Act. 7-8;
Ans. 8-9).
DISCUSSION
Appellant argues the claims as a group, and do not present separate
substantive arguments for the patentability of separately rejected claims 18,
20, 21, 27, and 28. Appeal Br. 3-8. Thus, we select claim 11 as
representative of the rejected claims, and the remaining claims on appeal
will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence
supports the Examiner’s conclusion that the subject matter of Appellant’s
claims is unpatentable over the applied prior art. We sustain the Examiner’s
§ 103(a) rejections essentially for the reasons set out by the Examiner in the
Final Office Action and Answer. We add the following.
The Examiner finds that Schneble discloses a method of treating an
electroplating rack used for supporting non-conductive substrates during a
plating process that includes ah the steps recited in claim 1 except:
(1) partially coating the electroplating rack with PVC plastisol, and
(2) etching the non-conductive substrates supported on the electroplating
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Application 14/184,011
rack with an etchant that does not contain chromic acid. Final Act. 3 (citing
Schneble 3:1-6 and 55-75, and 10:24-38).
The Examiner finds that Brindisi discloses a method for contacting an
electroplating rack with a solution to render it non-susceptible to electroless
deposition of metal during an electroless metal plating step by coating the
rack with vinyl plastisol, i.e., PVC plastisol. Final Act. 3 (citing Abstract,
and 1:6-10). Based on this teaching, the Examiner determines that one of
ordinary skill in the art would have been led to partially coat Schneble’s
electroplating rack to produce a valuable product, a treated rack. Final
Act. 4.
The Examiner finds that Bengston teaches a method for preparing a
non-conductive substrate for metallization using a solution that uses a non-
chromic acid etchant, which is more environmentally friendly than
traditional chromic acid etching solutions, but achieves comparable results
on non-conductive substrates. Final Act. 4 (citing Bengston Abstract). The
Examiner also finds that Bengston teaches racks coated with plastisol. Final
Act. 4 (citing ^ 61). The Examiner determines that one of ordinary skill in
the art would have been motivated to use the non-chromic acid etchant
taught by Bengston with the rack produced by Schneble because it is
effective and environmentally friendly. Final Act. 4.
Appellant argues that there is no teaching, suggestion, or motivation
to use Schneble’s metallization inhibitors to treat a rack that is partially
coated with plastisol. Appeal Br. 5. Appellant further argues that there is no
reasonable expectation that metallization inhibitors would be useful in
treating a rack that is partially coated with PVC plastisol and, furthermore,
be compatible with non-chromic acid based etchants. Id. at 6, 8.
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Appellant’s arguments are not persuasive of reversible error. In
assessing the obviousness of the subject matter recited in the claims on
appeal, “[ojften, it will be necessary for . . . [us] to look to interrelated
teachings of [the] multiple [prior art references relied upon by the Examiner]
... to determine whether there was an apparent reason to combine the
known elements in the fashion claimed . . . .” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). These prior art references must be read in
context, taking into account “demands known to the design community,”
“the background knowledge possessed by a person having ordinary skill in
the art,” and “the inferences and creative steps that a person of ordinary skill
in the art would employ.” KSR, 550 U.S. at 418. The background
knowledge attributable to one of ordinary skill in the art includes what was
admittedly known in the art at the time of the invention. In re Nomiya,
509 F.2d 566, 570-71 (CCPA 1975) (the admitted prior art in applicant’s
Specification may be used in determining the patentability of a claimed
invention).
Brindisi teaches coating plating racks used for supporting non-
conductive articles during a plating process with plastisol to “eliminate[] any
substantial deposition of metal on the rack.” Brindisi 1:6—10. Similarly,
Appellant’s Specification teaches that electroplating racks are “typically at
least partially coated with a non-conductive material to prevent the rack
from being entirely covered with metal during the electroplating process,
and the most common rack coating is PVC plastisol.” Spec. 2,11. 22-25.
Based on those teachings, we are not persuaded of reversible error in the
Examiner’s determination that one of ordinary skill in the art would have
been led to partially coat Schneble’s electroplating rack to produce a treated
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rack which eliminates any substantial deposition of metal on the rack. See
KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill”). Nor are we
persuaded that one of ordinary skill in the art would not have had a
reasonable expectation that combining Schneble’s metal-rack inhibitors with
Brindisi’s plastisol racks would have been successful. In re O’Farrell, 853
F.2d 894, 903-04 (Fed. Cir. 1988) (“Obviousness does not require absolute
predictability of success . . . [A] 11 that is required is a reasonable expectation
of success.”). Appellant does not provide sufficient evidence that
Schneble’s metallization inhibitors would not work with a rack at least
partially coated with plastisol.
Appellant argues that Brindisi teaches using chromic acid etchants in
its plating process, which prevents rack plate up (i.e., the plating rack
becomes coated with the activator and subsequently becomes coated with a
layer of metal in the electroless plating stage), teaches away from employing
etchants that do not contain chromic acid. Appeal Br. 6, 8.
Appellant’s argument is not persuasive of reversible error. First, the
Examiner relies on Bengston, not Brindisi for teaching etching solutions
including a permanganate and a mineral acid in place of chromic acid
etching solutions for environmental reasons as well as for improved
compatibility with plastisol. Final Act. 4. Appellant’s argument also fails to
persuasively identify any disclosure in Brindisi that teaches away from using
etchants that do not contain chromic acid. See In re Fulton, 391 F.3d 1195,
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1201 (Fed. Cir. 2004) (explaining that a reference teaches away when it
criticizes, discredits, or otherwise discourages the claimed solution).
According to Appellant, the comparative examples in their
Specification show that if the rack is not treated with a metallization
inhibitor prior to mounting the non-conductive parts to the rack, then the
plastisol becomes plated during subsequent metallization steps. Appeal
Br. 7. Appellant admits that Bengston suggests that a plastisol coated
electroplating rack may be used with a non-chromic acid etchant, but argues
that Bengston does not teach or suggest contacting the electroplating rack
with a metallization inhibitor (referred to by Appellant’s as “rack pre-
treatment”) prior to mounting non-conductive substrates to the electroplating
rack. See Appeal Br. 7-8. Because Bengston does not teach this rack pre­
treatment, Appellant argues that Bengston’s plastisol rack would become
plated during subsequent metallization steps, as evidenced by the
comparative examples in Appellant’s Specification, and, thus, is “inoperable
prior art.” Id.
Appellant’s argument is not persuasive of reversible error. “[0]ne
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references.” See In re
Keller, 642 F.2d 413, 426 (CCPA 1981). The Examiner does not find that
Bengston teaches contacting an electroplating rack, which is at least partially
coated with PVC plastisol, with a non-aqueous solution comprising a
metallization inhibitor prior to mounting non-conductive substrates to the
electroplating rack. Rather, the Examiner finds, and Appellant agrees, that
Bengston teaches or suggests a metallization process that uses a plastisol
coated electroplating rack for supporting non-conductive substrates during a
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plating process and etching the non-conductive substrates supported on the
electroplating rack with a non-chromic acid etchant. Compare Final Act. 4
(citing Bengston Abstract, 8, 56, 61) with Appeal Br. 7. The Examiner
finds that Brindisi teaches using metallization inhibitors to prevent
metallization on plastisol racks. Ans. 11; Brindisi 3:20-25. Based on the
combined teachings of Brindisi and Bengston, we are not persuaded of
reversible error in the Examiner’s determination that one of ordinary skill in
the art would have been led to partially coat Schneble’s electroplating rack
with PVC plastisol, contact the rack with a non-aqueous solution comprising
a metallization inhibitor, mount non-conductive substrates to the rack
contacted with the metallization inhibitor, and etch the non-conductive
substrates supported on the electroplating rack with an etchant that does not
contain chromic acid, as recited in claim 11. See KSR, 550 U.S. at 417 (“[I]f
a technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill”). Nor are we persuaded that one of ordinary skill in
the art would not have had a reasonable expectation that this combination
would have been successful. Appellant does not provide evidence that
Schneble’s metallization inhibitors would not work with a rack at least
partially coated with plastisol.
Appellant’s argument that the Examiner relies on impermissible
hindsight in combining Schneble, Brindisi, and Bengston is not well-taken.
Reply Br. 2-4. The Examiner’s rejection relies on teachings of the prior art
references, as they would have been understood by a person of ordinary skill
in the art at the time of the invention, not knowledge gleaned from
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Appellants’ Specification. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971) (“Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant’s disclosure, such a reconstruction is proper.”).
In sum, we have carefully considered Appellant’s arguments, but we
are not persuaded of reversible error in the Examiner’s obviousness analysis
Accordingly, we sustain the rejection of claim 11. Claims 13-28, and 30,
not separately argued, fall with representative claim 11.
DECISION
For the above reasons, the rejections of claims 11, 13-28, and 30 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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